Emilio Tovilla, Contributing Member 2023-2024
Intellectual Property and Computer Law Journal
Introduction
In February of 2022, Washington fans and sports enthusiasts highly anticipated the announcement of the new name for one of the oldest teams in the NFL.[1] Since departing from its eighty-seven-year run as the Washington Redskins, a “W” graced the side of player helmets rather than the iconic Redskin portrait during the 2020 and 2021 seasons.[2] After a year and a half of speculation, blogs, and tweets, the NFL franchise officially rebranded to the Washington Commanders.[3] The announcement received major backlash, with requests to adopt names such as the “Washington Red Hawks” or returning to the Washington Football Team.[4] Despite the negative feedback from fans, the DC area franchise moved forward with its new brand. That is until the United States Patent and Trademark Office (USPTO) became involved.
In May 2023, the USPTO denied the Washington Commanders’ trademark application.[5] The USPTO relied on two discovered references that raised concerns about the likelihood of confusion.[6] These references included the Commanders’ Classic, an annual college football matchup between the Air Force and Army, and pending applications to trademark names including “Washington Space Commanders” and “Washington Wolf Commanders” by a Virginia man with a small business selling fictional sports team gear.[7] However, after an appeal and months of review, the Washington Commanders overcame hurdles to obtain approval for the trademark by the USPTO.[8]
A trademark uniquely identifies a person or company’s goods or services to consumers.[9] The initial denial of the Washington Commanders’ trademark raises two questions: (1) whether reasonable consumers would likely confuse an NFL team with a college football game and, (2) whether multiple trademark applications by one person in anticipation of a corporation’s rebrand unfairly reduces the pool of available names for trademark. Given that both situations temporarily blocked an NFL team’s means to trademark a name, trademark standards of confusion may be too strict and raise concern for trademark public policy.
This article will discuss whether trademark standards for likelihood of confusion and “bad faith trademarks” are fair for trademark applicants. Part II will discuss the background of the Washington Commanders’ application denial and approval, as well as how the likelihood of confusion is determined and what constitutes bad faith trademarks. Part III will discuss whether the Washington Commanders’ trademark would reasonably lead to a likelihood of confusion compared to the Commanders’ Classic and whether the various trademark applications were fair and non-malicious. Finally, Part IV concludes by suggesting how trademark applicants can be protected while maintaining the trademark objective of distinguishing products and services for consumer knowledge.
Background
The purpose of a trademark is to use a word, phrase, symbol, design, or any combination thereof, to distinguish a person or company’s goods or services from others.[10] One misconception of trademarks is that it bars general use by other people or entities.[11] However, infringement only occurs when the trademark is used in the same context for which it was trademarked.[12] Proposed trademarks are analyzed by UPSTO examiners and one of the big determinations made is whether the trademark presents a likelihood of confusion for consumers.[13]
Cited References by USPTO
In May 2023, the Washington Commanders’ announced that the USPTO denied its trademark application for a likelihood of confusion.[14] This denial was not the result of poor selection by the NFL franchise, as it purposely avoided the use of fan-favorite contenders such as “Washington Red Wolves” to minimize trademark infringements or other legal obstacles.[15] The USPTO cited two references in its denial.
The first reference, and the more difficult one to overcome of the two, is the trademark on the Commanders’ Classic. The annual college football showdown between the Air Force and Army, it is part of a three-game series between the Army, Air Force, and Navy to determine the winner of the Commander-in-Chief’s trophy, awarded since 1972.[16] Due to the use of the word “commander” in the scope of football, the USPTO deemed a possible likelihood of confusion and association between the two trademarks.
The second reference is a series of pending trademark applications by Martin McCaulay, a Washington football fan from Alexandria, VA.[17] What started as a fun hobby, McCaulay now runs a small business selling merchandise with fictional football team names.[18] In anticipation of Washington’s new name, McCaulay filed multiple applications attempting to trademark names like “Washington Space Commanders” and “Washington Wolf Commanders”.[19] Due to the use of the word “commander” in the scope of football, the USPTO determined that there could be a likelihood of confusion between the Washington Commanders and McCaulay’s fictitious team trademarks.
McCaulay expressed his intended cooperation with the Washington Commanders and willingness to surrender rights to any trademark he possesses if it helps the NFL franchise secure its new name.[20] In return for relinquishing the name, McCauley requested that the team sponsor a scholarship for Native American students. [21]
Trademark Approval
In response to the initial trademark denial, the Washington Commanders appealed the USPTO’s decision.[22] Upon review of the revised application, the USPTO deemed it sufficient and granted the trademark.[23] Interestingly, the denial was ultimately seen as a procedural step rather than a legitimate threat to the Commanders’ rebranded name.[24]
In the time between the denial and approval, Washington D.C. intellectual property (IP) attorney Josh Gerben opined that the Commanders would eventually achieve registration of the trademark. [25] Gerben asserted that the argument of “the average football consumer believing the NFL Washington Commanders was somehow related to the Commanders’ Classic game at the college level” would be a huge stretch.[26] Further, the Washington Commanders is a widely known pro football team. Considering both factors, it would be likely that neither of the parties cited in the USPTO’s denial could make a “realistic argument” that the team would be unable to use the name.[27]
Likelihood of Confusion
“Likelihood of confusion exists between trademarks when the marks are so similar and the goods or services for which they are used are so related that consumers would mistakenly believe they come from the same source.”[28] Determining the “reasonable consumer” in trademark law is difficult due to the integration of cognitive abilities in its definition.[29] Cognitive abilities considered include how experienced the consumer is in the market or how gullible or skeptical the consumer is.[30] Accounting for experiences in the determination of the reasonable consumer makes the standard difficult to establish because a judge or examiner cannot consider their own perspective to decide whether a reasonable consumer would likely confuse two trademarks.[31]
The standard to determine if a likelihood of confusion is possible between two trademarks is the Lapp Test.[32] Applied by both the USPTO in granting trademarks and by the courts in trademark infringement lawsuits, the test has an extensive list of factors to consider. Some factors include (1) The degree of similarity between the owner’s mark and the alleged infringing mark; (2) The length of time the defendant has used the mark without evidence of actual confusion arising; (3) The intent of the defendant in adopting the mark; (4) The evidence of actual confusion; (5) Whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; (6) The extent to which the targets of the parties’ sales efforts are the same; and (7) The relationship of the goods in the minds of consumers because of the similarity of function.[33]
The factors are non-exhaustive, and a satisfaction of all or a majority of factors is not necessary for a likelihood of confusion to exist.[34] Application of the test varies by case, with the relevance of certain factors weighing more depending on the facts of the case.[35]
Trademark in Bad Faith
Trademark in bad faith occurs when an individual or entity obtains a trademark with no intention to use the trademark in commerce.[36] Rather, the motive for trademark is to bar a company or person from being able to register the same trademark. [37] Those who trademark in bad faith are typically referred to as trademark trolls.[38] Often, trademark trolls will file applications in anticipation of a person or company planning the trademark of a specific word, phrase, or symbol in the future. If the USPTO grants the trademark, trademark trolls will usually contact the entity that was deprived of the trademark and offer to sell the trademark for personal profit. To avoid this, attorneys advise that companies and individuals seek a trademark as soon as possible and maintain information regarding the brainstorming of potential trademarks as secretive as possible.[39]
Discussion
The decision by the USPTO to initially reject the Washington Commanders’ trademark raises reasonable concerns. It is rational to question whether the mere possibility of confusion between a once-a-year football game and a multi-billion-dollar NFL franchise should be sufficient to deprive the Washington Commanders’ of a trademark. Additionally, the denial of the Washington Commanders’ application due to multiple pending applications that belong to one individual raises a question of fairness. While trademarks serve the purpose of protecting consumers, trademark standards should ensure that all who seek a mark for the purpose of commerce have equal opportunity.
Likelihood of confusion between the Washington Commanders and the Commanders’ Classic
The analysis for the likelihood of confusion looks at whether the existence of two trademarks would cause a reasonable consumer to confuse the source of a product or services.[40] IP attorney Josh Gerben stated that the crux of a strong argument for the Washington Commanders’ would be that the word “commander” would not cause any confusion with the Commanders’ Classic.[41] Application of cognitive abilities in the establishment of the reasonable consumer could have created a favorable argument for the Washington Commanders. The USPTO could consider the consumer’s experience in the market.[42] This would entail the average football consumer, who would likely distinguish an NFL team from a college football game. Another cognitive ability that could be considered is how gullible or skeptical the consumer is.[43] A reasonable football consumer would likely determine that purchasing a ticket to the Commanders’ Classic would not entail watching an NFL game with the Washington Commanders.
When applying the Lapp Test in determining the likelihood of confusion, applicable factors are determined by relevance to the trademark in question. Factors the USPTO may consider in a likelihood of confusion analysis between the Washington Commanders and the Commanders’ Classic include (1) The length of time the defendant has used the mark without evidence of actual confusion arising; (2) Whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; and (3) The extent to which the targets of the parties’ sales efforts are the same.[44]
For the first factor, The Washington Commanders went an entire NFL season and fifteen months total before the USPTO denied the trademark. No evidence has been provided from this timeframe that supports a reasonable football consumer would have confused the Washington Commanders with the Commanders’ Classic. For the second factor, although the “goods” from the Washington Commanders and Commanders’ Classic are not competing, both are marketed through similar channels of trade and generally through the same media, such as ESPN and sports broadcasting. The third factor builds onto this, as the target for both Washington Commanders and Commanders’ Classic are a football-interested population. Most individuals who tune into sports media and are part of the targeted football population generally have a decent understanding of football and would likely be able to distinguish the Army-Air Force football game from an NFL franchise.
Whether McCaulay’s applications of various names was malicious
Trademark trolls are those who file trademark applications with no intent to use a trademark and prevent others from obtaining it.[45] Although McCaulay filed multiple trademarks in anticipation of the Washington Commanders’ rebrand announcement, proving bad faith will likely be difficult for two reasons: (1) It is probable that McCaulay intends to use the trademarked names for his small business. (2) McCaulay’s willingness to cooperate with the NFL team and requesting the creation of scholarships rather than a selling price makes it challenging to accuse him of being a “trademark troll.”
McCaulay does not seem to have the motive to deprive the Washington Commanders from using “commander” in its name. However, for public policy purposes, allowing multiple trademarks by one person is questionable if it was done in anticipation of a corporation releasing its rebranded name. As a Washington fan, McCauley likely followed fan speculation as well as updates from the Washington Commanders leading up to the official announcement. The sudden interest in trademarking multiple names with the word “commander” creates suspense around McCauley’s motive.
Trademark law has some level of protection requiring applicants to show intent of use for a proposed trademark.[46] However, the threshold is quite low, as only a sworn statement of good faith intention to use the trademark in commerce will suffice.[47] This makes it easier for trademark trolls to file multiple applications to the detriment of others. Or, in unique cases such as this one, it allows mass trademark applications by McCaulay, who does not show bad faith on the surface, but places an obstacle for the Washington Commanders to obtain a trademark.
Of course, there is the argument that customarily, attorneys advise clients to limit public disclosure of information related to potential trademarks.[48] The nature of NFL teams is to be in the public eye, which brings scrutiny. A public entity or figure should not be subject to the schemes of trademark trolls simply for possessing less privacy. If multiple trademark applications are allowed to be submitted in anticipation of an NFL team’s name announcement, whether bad faith is present or not, then the purpose of trademark is lost. Trademarks are meant to inform consumers where the products or services they purchase originate.[49] If mass trademarking is allowed by singular individuals or corporations and use is either minimal or nonexistent, then the trademark has no purpose and deprives others from using it.
Conclusion
While a trademark should not be easily attainable and should maintain its purpose of consumer protection, there is a public policy interest in making the trademark application process fair for all. A suggestion to achieve this is placing more weight on actual confusion evidence in a likelihood of confusion analysis. Courts have established their own factors and standards for determining the likelihood of confusion.[50] However, the Fourth and Ninth Circuits have emphasized the strength of actual confusion evidence and claim it can be the most important factor in determining likelihood of confusion.[51]
A method for providing evidence of actual confusion is the use of public opinion surveys.[52] The surveys can give insight on whether the reasonable consumer would actually confuse two marks. In 1960, a group of judges created recommendations of basic factors to consider for consumer surveys.[53] Within these factors, a couple pertain to the target population: (1) the “universe,” or pool from which survey respondents are selected, must be the appropriate target group for the purposes of the particular survey in question; (2) the representative sample drawn from the universe must be statistically valid and appropriate under the circumstances.[54] No evidence has been provided to show reasonable football consumers confused the Washington Commanders with the Commanders’ Classic. Having a standard of greater weight on actual evidence of confusion would have been beneficial to the Washington Commanders. More importantly, it would have provided a fairer determination of a likelihood of confusion and most likely avoided the initial denial.
Another suggestion would be to raise the standard of “good faith intention” for trademark applications. This can help ensure that trademarks are granted to those who fully intend to use a mark in commerce. If trademark trolls are allowed to file multiple applications with a low threshold of showing actual intent to use in commerce, registered trademarks could be compromised of unused words, symbols, and phrases. This would last for periods of time, until abandonment was issued, and the trademarks became available again. [55] Unused marks defeat the purpose of trademarks, which is to allow products and services to have a unique mark that inform purchasers where their consumption originates from.
In conclusion, although the Washington Commanders ultimately obtained its coveted trademark, the current standards of trademark applications seem inconsistent. Allowing people to obtain multiple trademarks in anticipation of another’s trademark and having a low bar for the likelihood of confusion can continue fostering negative consequences for those who seek trademarks.
[1] Jonathan Franklin & Bill Chappell, The Washington Football Team’s new name is the Washington Commanders, NPR, (Feb. 2, 2022, 9:56 AM), https://www.npr.org/2022/02/02/1077365060/washington-commanders-football-team-new-name.
[2] Stephen Whyno, Washington’s NFL team drops ‘Reskins’ name after 87 years, AP News, (July 13, 2020, 3:51 PM) https://apnews.com/article/nhl-mlb-sports-general-nfl-north-america-b6f6919292f5a3c94cb23d92bde21a54.
[3] Id.
[4] Art Garcia, Washington Fans Slam ‘Commanders’, Sports Illustrated, (Feb. 2, 2022, 3:54 PM), https://www.si.com/nfl/commanders/news/washington-commanders-name-change-twitter-fans-reaction.
[5] Tyler Sullivan, Washington Commanders’ trademark denied by USPTO: What’s next for the franchise?, CBS Sports, (May 25, 2023) https://www.cbssports.com/nfl/news/washington-commanders-trademark-denied-by-uspto-whats-next-for-franchise/.
[6] Id.
[8] Matthew Paras, Commanders’ trademark application finally approved, Washington Times, (Sept. 28, 2023) https://www.washingtontimes.com/news/2023/sep/28/commanders-trademark-application-finally-approved/.
[9] What is a Trademark?, US Pat. and Trademark Off., (July 18, 2023, 12:00 PM), https://www.uspto.gov/trademarks/basics/what-trademark.
[10] Id.
[11] Id.
[12] Id.
[13] Likelihood of Confusion, US Pat. and Trademark Off., (Feb. 19, 2021, 9:10 AM), https://www.usatoday.com/story/sports/nfl/commanders/2023/05/24/washington-commanders-trademark-denied-new-name/70252650007/.
[14] Jordan Mendoza, Washington Commanders trademark gets denied. Will team need a new name?, USA Today, (May 24, 2023, 3:51 PM) https://www.usatoday.com/story/sports/nfl/commanders/2023/05/24/washington-commanders-trademark-denied-new-name/70252650007/.
[15] Nicki Jhabvala, The Commander’s name trademark hits a snag. Some fans want a do-over, Washington Post, (May 25, 2023, 4:18 PM) https://www.washingtonpost.com/sports/2023/05/25/commanders-trademark-denied-name-change/.
[16] Commander-in-Chief’s Trophy, Wikipedia, (Nov. 4, 2023, 10:19 PM) https://en.wikipedia.org/wiki/Commander-in-Chief%27s_Trophy.
[17] Tyler Conway, Washington Commanders’ Trademark Application Denied by US Patent Office, Bleacher Report, (May 24, 2023), https://bleacherreport.com/articles/10077177-washington-commanders-trademark-application-denied-by-us-patent-office.
[18] Evan Koslof, An Alexandria man Is partially responsible for the denial of the Washington Commanders trademark, WUSA9 News, (May 26, 2023, 6:40 AM) https://www.wusa9.com/article/sports/nfl/washington-commanders/washington-commanders-trademark-denied-why/65-f9de54e2-5063-4c72-94fe-968898c3d3b4.
[19] Id.
[23] Id.
[24] Id.
[25] The Washington Post Speaks to Josh Gerben About the Washington Commanders’ Trademark Refusal, Gerben IP (Nov. 19, 2023) https://www.gerbenlaw.com/news/the-washington-post-speaks-to-josh-gerben-about-the-washington-commanders-trademark-refusal/.
[26] Id.
[27] Id.
[28] Likelihood of Confusion, supra note 13.
[29] Laura Heymann, The Reasonable Person in Trademark Law, Coll. of William and Mary L. Sch. Fac. Publ’n, (2008), https://scholarship.law.wm.edu/facpubs/194/.
[30] Id.
[31] Id.
[32] Lapp Test, Sch. Legal Info. Inst., (June 2023), https://www.law.cornell.edu/wex/lapp_test.
[33] Id.
[34] Id.
[35] Id.
[36] Delfina Homen, Don’t Let Your Core Brands Fall Victim to Trademark Trolls, Miller Nash, LLP, (Aug. 4, 2022), https://www.millernash.com/industry-news/dont-let-your-core-brands-fall-victim-to-trademark-trolls.
[37] Id.
[38] Id.
[39] Id.
[40] Likelihood of Confusion, supra note 13.
[42] Id.
[43] Id.
[44] Lapp Test, supra note 32.
[46] Trademark applications – intent-to-use (ITU) basis, US Pat. and Trademark Off., (Oct. 26, 2023, 4:46 PM) https://www.uspto.gov/trademarks/apply/intent-use-itu-applications.
[47] Id.
[49] What is a Trademark?, supra note 9.
[50] Trademarks: Demonstrating Actual Consumer Confusion, Cornell Univ. L. Sch., (Nov. 19, 2023), https://courses2.cit.cornell.edu/sociallaw/topics/Trademarks-confusion.htm.
[51] Id.
[52] Id.
[53] 98 A.L.R. Fed. 20 §2[A].
[54] Id.
[55] Abandonment of Trademark, Cornell L. Sch. Legal Info. Inst., (Feb. 2022), https://www.law.cornell.edu/wex/abandonment_(of_trademark)
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